Wednesday, 9 March 2011

The present decision deals with a case where the Opposition Division (OD) had taken a rather unusal course of action: The third auxiliary request filed during the oral proceedings (OPs) was found to comply with A 84, A 54 and A 56 on the basis of hypothetical amendments still to be carried out. The patent proprietor was given two months to introduce suitable disclaimers and adapt the description. When it did so, the OD maintained the patent in amended form. The details of the proceedings are quite complex and can be found in the body of the decision.

NB: All the legal provisions refer to the EPC 1973.

[3.1] The first question to be decided in this appeal is whether the first instance decision was sufficiently reasoned. Therefore the board has to establish whether the impugned decision complies with the relevant provisions of EPC 1973, in force at the date of said decision.

[3.2] R 68(2), first sentence, provides that decisions of the EPO open to appeal shall be reasoned. According to established jurisprudence of the Boards of Appeal, to satisfy the requirement of R 68(2) a decision must contain, in logical sequence, those arguments which justify its tenor. The conclusions drawn by the deciding body from the facts and evidence must be made clear. Therefore all the facts, evidence and arguments which are essential to the decision must be discussed in detail in the decision including all the decisive considerations in respect of the factual and legal aspects of the case. The purpose of the requirement to reason the decision is to enable the parties and, in case of an appeal, also the board of appeal to examine whether the decision could be considered to be justified or not (see e.g. T 278/00).

[3.3] Therefore, even if the opponent chose not to file any further observations on the new third auxiliary request filed with the letter dated 17 May 2006, the OD should have given the reasons for the dismissal of the objections previously submitted by the opponent in opposition proceedings and which were still applicable to the amended claims.

[3.4] Reasoning does not mean that all the arguments submitted should be dealt with in detail, however, it is a general principle of good faith and fair proceedings that reasoned decisions contain, in addition to the logical chain of facts and reasons, at least some motivation on crucial points of dispute insofar as this is not already apparent from other reasons given (see for example T 740/93 [5.4]). This ensures not only that the party concerned has a fair idea as to why its submissions were not considered convincing so that it can react accordingly, but also that the board of appeal is in a position to review the decision taken by the first instance department, as is the primary purpose in appeal proceedings (see inter aliaG 10/93; T 534/89).

[3.5] In the present case, several amendments were introduced in the claims of the third auxiliary request filed with the letter of 17 May 2006, which formed the basis for the OD’s decision to maintain the patent in amended form in accordance with A102(3) and A 106(3). According to the Enlarged Board of Appeal decision G 9/91 [19], in case of amendments made by the proprietor during the opposition proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC, e.g. A 123.

[3.6] In the board’s judgement, the above principles for a sufficiently reasoned decision have not been followed by the OD for the reasons as follows.

[3.6.1] Although the patent proprietor filed at the OPs an incomplete version of claim 1 with the last version of the third auxiliary request (annex 8), the OD asserted the following at the end of point 10 of the facts and submissions:

“At the end of the OPs, the patentee was given a time limit of two months upon receipt of the minutes to file a clean-typed version of the accepted claims and a description adapted thereto” (emphasis added).

This is in clear contradiction with the reading of the minutes and their accompanying annexes 7 and 8, which makes it clear that the disclaimers in claim 1 had to be completed.

Thus, the last third auxiliary request filed at the OPs(annex 8) was incomplete and required, as expressed in the minutes, further amendments to the disclaimers.

[3.6.2] On top of that, the patentee’s letter dated 17 May 2006 makes it absolutely clear that the third auxiliary request filed with said letter contained further, not yet discussed amendments. Therefore, it was manifest from the content of the letter dated 17 May 2006 that the enclosed third auxiliary request was not a “clean-typed version” of any version “accepted at the OPs before the OD”.

In fact, the patent proprietor stated in said letter that the new claim’s wording (meaning amended claim 1) was the result of the analysis it had made about the relevance of the international applications D5 and D7 in consideration of the validity of their respective priority (for this purpose it filed a copy of the priority documents of D5 and D7, namely D5P and D7P, respectively).

[3.6.3] However, the decision under appeal does not give any reasons in relation to the international applications D5 and D7 as prior art documents, nor about the validity of their respective priority. In fact, it is unclear from the decision under appeal whether the OD considered the content (or part of the content) of the international applications D5 and D7 as forming part of the state of the art within the meaning of A54(3), or even within the meaning of A54(2).

Thus, the decision under appeal is not reasoned in respect of the disclaimers in claim 1 of the third auxiliary request which were introduced in view of the international applications D5 and D7. This lack of reasoning affects the assessment of the allowability of the disclaimers under A123(2) and of the novelty of the subject-matter claimed (and it may even affect the assessment of inventive step).

[3.7] Since the patent proprietor’s letter dated 17 May 2006 is explicitly mentioned in the OD decision, and the amended set of claims of the third auxiliary request filed with said letter was annexed to the decision under appeal (together with an adapted description), it is to be assumed that the OD had that particular set of claims when the decision of maintenance in amended form was issued and sent to the parties. The reasons why the amended set of claims filed with the letter of 17 May 2006 was wrongly qualified in the OD’s decision as “clean copy” of the claims accepted at the OPs remain unclear, but are irrelevant for achieving the conclusion that the decision under appeal is deficient in view of a lack of reasoning.

[3.7.1] Moreover, it has to be stressed that novelty of the subject-matter claimed in the patent in suit was challenged right from the beginning in the opposition proceedings (i.e. with the notice of opposition) vis-à-vis (inter alia) documents D5 and D7. The objections of lack of novelty vis-à-vis these international applications were never abandoned by the opponent, as can be inferred from the content of the minutes of the OPs before the OD, since even after the second filing of the third auxiliary request (annex 8 according to the minutes of the OPs) by the patent proprietor, the opponent still raised an objection of lack of novelty vis-à-vis document D5 (see facts and submissions, above). As a consequence of this specific objection raised by the opponent in the OPs, the OD asked the patent proprietor to provide for further disclaimers into claim 1 and gave the patentee two months time for the introduction of the appropriate disclaimers.

[3.7.2] Additionally, the apparent reasons for the presence of the disclaimers are stated in the facts and submissions of the OD’s decision (to be found on page 4 within the account given on the OPs):

“It was recorded that the provisos were intended to exclude compounds known from D5, D5P and D7”,

D5P is the priority document of the application D5, (emphasis added). This statement implies a discussion with the parties in relation to the validity of the priority of the international application D5 (followed by a conclusion of the OD in this respect) which is neither reflected in the minutes of the OPs nor in the reasons given in the decision under appeal for the maintenance on the basis of the third auxiliary request.

[3.7.3] In point 3 of the Reasons for the impugned decision under the heading “3rd Auxiliary Request”, the OD dealt with novelty only in relation to documents D1 and D3 and, as already said, remained silent in relation to the reasons why the amendments introduced into claim 1 serving as basis for the maintenance (in particular the introduction of several disclaimers) complied with the requirements A 84 and A 123(2).

[3.7.4] The reasons for the introduction of the individual disclaimers are not self-evident and required therefore, inter alia, a detailed examination of several documents and their priority documents in order to conclude which parts, if any, of the international applications D5 and D7 form part of the state of the art within the meaning of A54(3) (depending on the validity of the priority of these two applications), or (also depending on the validity of the priority of the patent in suit) within the meaning of A 54(2). Hence, the OD should have stated in the decision under appeal the reasons for the compliance of the amendments with A 84 and A 123(2) and the specific reasons why the amendments were considered to be sufficient for establishing novelty over the international applications D5 and D7.

[3.8] The first instance decision is the maintenance of the patent in amended form, therefore the OD had to fully examine the amendments as to their compatibility with the requirements of the EPC before it decided to maintain the patent in amended form (see A 102(3) and G 9/91). Additionally, the opponent had raised objections under A 84 during the OPs before the OD. Finally, disclaimers were introduced in claim 1 of the third auxiliary request to delimit and distinguish the claimed subject-matter from the state of the art on file (in particular D5 and D7).

Since some of the disclaimers were introduced in the claims during the opposition proceedings, it was necessary before deciding on novelty, to establish their allowability (A 84 and A 123), since it would have been futile to acknowledge novelty on the basis of an unallowable disclaimer.

[3.9] As a matter of fact, in view of the lack of any specific reasoning in relation to claim 1 of the third auxiliary request and its compliance with A 84 and A 123, and A 54 (in relation to the international applications D5 and D7), the board cannot assess whether or not the OD examined all amendments, including the disclaimers, as to their compatibility with the requirements of the EPC.

It remains also unclear whether the objection and arguments submitted by the opponent with respect to A 84 have been considered by the OD and, if they were considered, for which reasons this objection does not anticipate the maintenance of the patent in amended form.

[3.10] Therefore, in the absence of any reasoning in relation to the allowability of the amendments introduced in the claims of the third auxiliary request, the board cannot review the decision under appeal as to its merits, and the parties cannot express any opinion as to whether or not they consider the reasons for the decision to be justified.

Additionally, in view of this lack of reasoning in relation to A 84, the appellant-opponent cannot challenge the impugned decision in relation to the allowability of the amendments.

Thus, the logical chain of reasoning is missing in relation to A 84 and A 123(2) and the decision is also deficient in this respect.

[3.11] Therefore, the decision of maintenance of the patent in amended form based on the amended third auxiliary request is not reasoned with respect to allowability of the disclaimers and is not sufficiently reasoned in relation to novelty, contrary to the requirements of R 68(2).

[3.12] Summarising, the omission of reasoning for the allowability of the amendments in claim 1, in particular in relation to the reformulated disclaimers as a means for establishing novelty of the subject-matter in claim 1, and the insufficient reasoning for establishing novelty (this also applies to inventive step) pre-empted the filing of specific grounds of appeal properly challenging the OD’s decision as to its merits. The lack of sufficient reasoning in relation to amended claim 1 of the third auxiliary request filed with letter of 17 May 2006 also hinders the board of appeal to perform a substantive revision of the first instance decision. Hence, the violation of R 68(2) amounts to a procedural violation of a substantial nature since it affects the entire proceedings.

The Board then remitted the case to the OD and ordered the reimbursement of the appeal fee.

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